OPPOSITION No B 3 057 041

Siemes Schuhcenter GmbH & Co. KG, Krefelder Str. 310, 41066, Mönchengladbach, Germany (opponent), represented by Leifert & Steffan Patentanwälte PartG mbB, Burgplatz 21-22, 40213, Düsseldorf, Germany (professional representative)

a g a i n s t

Procedos AB, Bredastensvägen 168, 271 72 Köpingebro, Sweden (applicant), represented by Ports Group AB, Kalkylvägen 3, 43533 Mölnlycke, Sweden (professional representative).

On 11/07/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 057 041 is upheld for all the contested goods, namely:

Class 25: All the goods applied for in this Class.

Class 28: Gym balls; exercise bars; body-building apparatus; body-building apparatus [exercise]; machines for physical exercises; machines incorporating weights for use in physical exercise; sports equipment; sporting articles and equipment .

2. European Union trade mark application No 17 880 320 is rejected for all the contested goods. It may proceed for the remaining goods and services.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 17 880 320 ‘PEONE’ namely against all the goods in Class 25 and some of the goods in Class 28. The opposition is based on, inter alia, Benelux trade mark registration No 910 475 for the word mark ‘LEONE’. The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Benelux trade mark registration No 910 475.

a) The goods and services

The goods and services on which the opposition is based are, inter alia, the following:

Class 25: Clothing; gymnastic shoes; headgear for wear.

The contested goods are the following:

Class 25: Training shoes; sweatpants; sweat shirts; clothing for gymnastics; sweat jackets; baseball caps; caps [headwear];sweat shorts.

Class 28: Gym balls; exercise bars; body-building apparatus; body-building apparatus [exercise]; machines for physical exercises; machines incorporating weights for use in physical exercise; sports equipment; sporting articles and equipment.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 25

The contested sweatpants; sweat shirts; clothing for gymnastics; sweat jackets; sweat shorts are included in the broad category of the opponent’s clothing. Therefore, they are identical.

The contested training shoes are synonyms of the opponent’s gymnastic shoes. Therefore, they are identical.

The contested baseball caps; caps [headwear] are included in the broad category of the opponent’s headgear for wear. Therefore, they are identical.

Contested goods in Class 28

All the contested goods comprise a wide range of sporting articles and equipment. It follows that these goods are similar to a low degree to the opponent’s clothing as they usually coincide in producer, relevant public and distribution channels.

b) Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical or similar to a low degree are directed at the public at large as well business customers with specific professional knowledge or expertise. The degree of attention is considered to be average.

c) The signs

LEONE	PEONE
Earlier trade mark	Contested sign

The relevant territory is the Benelux.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The unitary character of the Benelux trade mark means that an earlier Benelux trade mark has identical protection in the relevant territories. Earlier Benelux trade marks may therefore be relied upon to challenge any subsequent application for a trade mark that would prejudice their protection, even if this is only in relation to the perception of consumers in part of the Benelux (09/03/2005, T‑33/03, Hai, EU:T:2005:89, § 39; 03/03/2004, T‑355/02, ZIRH, EU:T:2004:62, § 36).

As the sign’s elements ‘LEONE’ and ‘PEONE’ are meaningless for the Dutch-speaking consumers, the Opposition Division finds it appropriate to focus the comparison of the signs on the Dutch-speaking part of the relevant public.

Since these elements do not convey any specific meaning for the relevant public, they are distinctive.

Visually and aurally, the signs coincide in the sequence/sound of the letters ‘*EONE’. However, they differ in the initial letters/sounds ‘L’ in the earlier trade mark and ‘P’ of the contested application.

Therefore, the signs are visually and aurally similar to an average degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends, inter alia, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

For the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. However, likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

In the present case the goods have been found partly identical and partly similar to a low degree. They target both the general and professional public, who will pay an average degree of attention.

The signs under comparison have been found visually and aurally similar to an average degree insofar as they coincide in the sequence of letters *EONE. The signs differ in their initial letter. In this regard, it must be pointed out that in terms of recognition and recall, the beginning of a trade mark tends to be more important, since the first part of a sign is generally the part that catches consumers’ attention and will be remembered more clearly than the rest of the sign. However, this does not alter the basic principle that the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details.

Taking all the above into account, the Opposition Division considers that the differences between the signs are not sufficient to outweigh the similarities between them. Consequently, the relevant public, when encountering the signs in relation to identical goods are likely to think that they come from the same undertaking or from economically linked undertakings.

As regards the goods that are similar to a low degree only, it must be kept in mind that evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, the similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17). In the present case, the degree of similarity between the signs is clearly sufficient to offset the low degree of similarity between some of the goods.

Considering all the above, there is a likelihood of confusion on the part of the Dutch-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of Benelux is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s Benelux trade mark registration No 910 475. It follows that the contested trade mark must be rejected for all the contested goods.

As this earlier right leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Sandra IBAÑEZ

Aldo BLASI

Marianna KONDAS

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.